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April 11, 2022 IP Practice Vlogs: The USPTO’s New Pilot Program – Deferred Subject Matter Eligibility Response

Proffered by Senator Thom Tillis (R-NC) in the interest of expediting patent prosecution for those applications that receive Section 101 rejections, under the new Deferred Subject Matter Eligibility (DSMER) program, eligible applicants who receive a subject matter eligibility rejection with prior art rejection(s) or indefiniteness rejection(s) can defer substantively responding to the Section 101 rejection until all other rejections have been withdrawn. This program began on February 1 and will last until July 30 of this year. The U.S. Patent and Trademark Office (USPTO) will notify eligible applicants in the first Office Action on the merits. The applicant can then choose to participate in the program by filling out a form paragraph.

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About This Podcast

Global IP Counselors is dedicated to protecting the intellectual property rights of applicants around the world.  We believe in drafting disclosures that are enabled to support a broad range of claim scopes at the onset of prosecution, placing the applicants’ claims strongly in position for future assertion.  In order to provide world class IP service, we maintain a full understanding of the ongoing changes to the USPTO’s agency guidelines as well as precedential rulings from the US courts.  Join Wen Xie at the IP Practice Vlogs as she discusses the newest IP practice insights before the USPTO and the Federal Circuit.

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